WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ArcelorMittal (Société Anonyme) v. Florentino Lara

Case No. D2021-0662

1. The Parties

The Complainant is ArcelorMittal (Société Anonyme), Luxembourg, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Florentino Lara, Mexico.

2. The Domain Name and Registrar

The disputed domain name <mexicoarcelormittal.org> (the Domain Name) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2021. On March 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2021 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 8, 2021.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2021.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 8, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is one of the world’s leading steel producers and a leading iron ore mining company. Formed in 2006 from the merger of Indian-owned Mittal Steel and European steel producer Arcelor S.A., the Complainant is headquartered in Luxembourg and employs over 191,000 employees globally, serving customers in 160 countries, including Mexico. The Complainant is a Fortune 500 company and is listed on stock exchanges in New York, Amsterdam, Paris, Luxembourg, and Spain.

Since the 2006 merger, the Complainant has employed ARCELORMITTAL as a mark and used it in advertising, labelling, and in the domain name for its website at “www.arcelormittal.com”, with multiple subdomains such as <mexico.arcelormittal.com>, which is used for Spanish-language web pages aimed at the Mexican market.

The Complainant holds numerous ARCELORMITTAL trademark registrations, including the following:

The Registrar reports that the Domain Name was created on February 3, 2021 and is registered in the name of the Respondent, Florentino Lara of Mexico. No organization is given, and the address shown is plainly incomplete or false.

As evidenced by screenshots attached to the Complaint, the Domain Name formerly resolved to a website emulating the Complainant’s Spanish-language website at the subdomain <mexico.arcelormittal.com> designed for the Mexican market, copying the Complainant’s logo, content, and images. After the Complainant’s representatives succeeded in having this site taken down, the Domain Name has resolved to a parking page presented by the hosting company.

The Respondent appears to be the same individual respondent as in ArcelorMittal (Société Anonyme) v. Florentino Lara, Ventas Ternium, WIPO Case No. D2020-2897, a proceeding decided in January 2021 involving essentially the same factual pattern of copying the Complainant’s Mexican website. The disputed domain name in that proceeding was <mexarcelormittal.com>.

The Panel notes as well that five days after the current Domain Name was created, a similar domain name was registered with another register, <arcelormittalmex.org>, which was then then used in a similar fashion for a website emulating the Complainant’s Mexican website. That domain name is the subject of a separate proceeding, ArcelorMittal (Société Anonyme) v. Ingenio Puga, WIPO Case No. D2021-0663.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its registered ARCELORMITTAL trademark, which the Respondent has no permission to use and in which the Respondent has no evident rights or legitimate interests. To the contrary, the Respondent has used the Domain Name illegitimately to give a false impression of association with the Complainant and its Mexican operations.

According to the Complainant, this conduct also indicates bad faith, as it demonstrates an awareness of the Complainant and its distinctive mark, which is not a dictionary term and appears first in response to search engine queries. By hiding its identity and deliberately giving the impression that the website associated with the Domain Name was operated by the Complainant, the Respondent clearly intended to mislead Internet users and exploit the Complainant’s reputation. This appears to be a pattern of bad faith behavior, as it seems likely that the Respondent is the same person, or associated with the persons, involved in the other recent cases attacking the Complainant’s mark with similarly confusing domain names used for copycat websites. Even the “passive holding” of the Domain Name following the removal of the website mimicking the Complainant’s must be considered a bad faith use, as there can be no conceivable non-infringing use by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant holds registered ARCELORMITTAL trademarks. The Domain Name incorporates this mark in its entirety and adds the geographic name “mexico” to the string, which does not prevent a finding of confusing similarity. See id. section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.org” is disregarded as a standard registration requirement. See id. section 1.11.2.

The Panel concludes that the first Policy element is established on these facts.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its mark, and the Respondent’s use the Domain Name only for a website emulating the Complainant’s Mexican website. This shifts the burden to the Respondent to produce evidence of rights or legitimate interests. The Respondent has not done so.

The Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant’s ARCELORMITTAL mark is highly distinctive, has been in global circulation for more than a decade, and is clearly known to the Respondent. The Respondent promptly copied the Complainant’s logo on a website associated with the Domain Name and mimicked images and content from the Complainant’s Mexican website, while obscuring the Respondent’s identity and contact details on the website and in the registration. It appears likely that this is a pattern of practice, given recent UDRP filings by the Complainant. The Complainant has succeeded in taking down the false website in each of these cases. The Panel notes that a false site is sometimes used to lend credibility to fraud schemes and phishing emails using the associated domain name.

The list of examples in the Policy, paragraph 4(b) is not exhaustive, and panels have found bad faith in other trademark-abusive and otherwise illegitimate conduct, as well as in “passive holding” circumstances clearly targeting well-established marks. See WIPO Overview 3.0, sections 3.2, 3.3, 3.4. As the Complainant observes, it is difficult to conceive of any legitimate use of the Domain Name by the Respondent, and the Respondent has not come forward to suggest one.

The Panel concludes that the Complainant has established bad faith in the registration and use of the Domain Name within the meaning of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <mexicoarcelormittal.org>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: April 16, 2021